PRIBHDAS J. MIRPURI vs.
CA, DIRECTOR OF PATENTS & BARBIZON CORPORATION After, Minister Ongpin issued Memorandum which did not enumerate well-known
FACTS
Lolita Escobar, the predecessor-in-interest of petitioner Mirpuri, filed an application
for the registration of the trademark "Barbizon" for use in brassieres and ladies
undergarments. Escobar alleged that she had been manufacturing and selling these
products under the firm name "L & BM Commercial" since 1970.
Private respondent Barbizon Corporation, a US corporation opposed the application.
Director of Patents rendered judgment dismissing the opposition and giving due
course to Escobar's application.
Escobar later assigned all her rights and interest over the trademark to petitioner
Mirpuri who, under his firm name then, the "Bonito Enterprises," was the sole and
exclusive distributor of Escobar's "Barbizon" products.
In 1979, however, Escobar failed to file with the Bureau of Patents the Affidavit of
Use of the trademark required under Section 12 of R.A. 166. Due to this failure, the
Bureau of Patents cancelled Escobar's certificate of registration.
Escobar reapplied for registration of the cancelled trademark. Mirpuri filed his own
application for registration of Escobar's trademark. Escobar later assigned her
application to herein petitioner and this application was opposed by private
respondent.
Petitioner raised the defense of res judicata.
Escobar assigned to petitioner the use of the business name "Barbizon
International." Petitioner registered the name with the Department of Trade and
Industry (DTI) for which a certificate of registration was issued in 1987.
Private respondent filed before the Office of Legal Affairs of the DTI a petition for
cancellation of petitioner's business name. DTI, Office of Legal Affairs, cancelled
petitioner's certificate of registration, and declared private respondent the owner
and prior user of the business name "Barbizon International."
Director rendered a decision declaring private respondent's opposition barred by res
judicata and giving due course to petitioner's application for registration.
CA reversed the Director’s decision that case was barred and ordered that the case
be remanded to the Bureau of Patents for further proceedings.
ISSUES
Whether or not respondent is barred by filing this case by res judicata
Whether or not petitioner is liable for trademark infringement
HELD
The Paris Convention, is a multilateral treaty that seeks to protect industrial property
consisting of patents, utility models, industrial designs, trademarks, service marks,
trade names and indications of source or appellations of origin, and at the same
time aims to repress unfair competition. It is essentially a compact among various
countries which, as members of the Union, have pledged to accord to citizens of the
other member countries trademark and other rights comparable to those accorded
their own citizens by their domestic laws for an effective protection against unfair
competition. Both the Philippines and the United States of America, are signatories
to the Convention.
Private respondent anchors its cause of action on the first paragraph of Article 6bis
of the Paris Convention, said Article governing protection of well-known trademarks.
Art. 6bis is a self-executing provision and does not require legislative enactment to
give it effect in the member country. It may be applied directly by the tribunals and
officials of each member country by the mere publication or proclamation of the
Convention, after its ratification according to the public law of each state and the
order for its execution.
The essential requirement under Article 6bis is that the trademark to be protected
must be "well-known" in the country where protection is sought. The power to
determine whether a trademark is well-known lies in the "competent authority of
the country of registration or use." This competent authority would be either the
registering authority if it has the power to decide this, or the courts of the country in
question if the issue comes before a court.
Pursuant to Article 6bis, then Minister Villafuerte of the Ministry of Trade issued a
Memorandum instructing Director of Patents to reject all pending applications for
Philippine registration of signature and other world-famous trademarks by
applicants other than their original owners or users, enumerating several
internationally-known trademarks and ordered the Director of Patents to require
Philippine registrants of such marks to surrender their certificates of registration.
trademarks but laid down guidelines for the Director of Patents to observe in
determining whether a trademark is entitled to protection as a well-known mark in
the Philippines under Article 6bis of the Paris Convention. All pending applications
for registration of world-famous trademarks by persons other than their original
owners were to be rejected forthwith.
The Supreme Court in the 1984 landmark case of La Chemise Lacoste, S.A. v.
Fernandez ruled therein that under the provisions of Article 6bis of the Paris
Convention, the Minister of Trade and Industry was the "competent authority" to
determine whether a trademark is well-known in this country.
The Villafuerte Memorandum was issued in 1980. In the case at bar, the first inter
partes case, was filed in 1970, before the Villafuerte Memorandum but 5 years after
the effectivity of the Paris Convention. Private respondent, however, did not cite the
protection of Article 6bis, neither did it mention the Paris Convention at all. It was
only in 1981 when second case was instituted that the Paris Convention and the
Villafuerte Memorandum, and, during the pendency of the case, the 1983 Ongpin
Memorandum were invoked by private respondent.
We held in Wolverine Worldwide, Inc. v. CA that the Memorandum and E.O. did not
grant a new cause of action because it did "not amend the Trademark Law," . . . "nor
did it indicate a new policy with respect to the registration in the Philippines of
world-famous trademarks." In other words, since the first and second cases involved
the same issue of ownership, then the first case was a bar to the second case.
Here the second case raised the issue of ownership of the trademark, the first
registration and use of the trademark in the United States and other countries, and
the international recognition and reputation of the trademark established by
extensive use and advertisement of private respondent's products for over forty
years here and abroad. These are different from the issues of confusing similarity
and damage in first. The issue of prior use may have been raised in first case but this
claim was limited to prior use in the Philippines only. Prior use in second stems from
private respondent's claim as originator of the word and symbol "Barbizon," as the
first and registered user of the mark attached to its products which have been sold
and advertised worldwide for a considerable number of years prior to petitioner's
first application for registration of her trademark in the Philippines. Indeed, these
are substantial allegations that raised new issues and necessarily gave private
respondent a new cause of action. Res judicata does not apply to rights, claims or
demands, although growing out of the same subject matter, which constitute
separate or distinct causes of action and were not put in issue in the former action.
Respondent corporation also introduced in the second case a fact that did not exist
at the time the first case was filed and terminated: the cancellation of petitioner's
certificate of registration for failure to file the affidavit of use. It did not and could
not have occurred in the first case, and this gave respondent another cause to
oppose the second application. Res judicata extends only to facts and conditions as
they existed at the time judgment was rendered and to the legal rights and relations
of the parties fixed by the facts so determined. When new facts or conditions
intervene before the second suit, furnishing a new basis for the claims and defenses
of the parties, the issues are no longer the same, and the former judgment cannot
be pleaded as a bar to the subsequent action.
It is also noted that the oppositions in the first and second cases are based on
different laws. The opposition in first was based on specific provisions of the
Trademark Law, i.e., Section 4 (d) on confusing similarity of trademarks and Section 8
on the requisite damage to file an opposition to a petition for registration. The
opposition in second invoked the Paris Convention, particularly Article 6bis thereof,
E.O. No. 913 and the two Memoranda of the Minister of Trade and Industry. This
opposition also invoked Article 189 of the Revised Penal Code which is a statute
totally different from the Trademark Law. Causes of action which are distinct and
independent from each other, although arising out of the same contract,
transaction, or state of facts, may be sued on separately, recovery on one being no
bar to subsequent actions on others. The mere fact that the same relief is sought in
the subsequent action will not render the judgment in the prior action operative as
res judicata, such as where the two actions are based on different statutes.
N VIEW WHEREOF, the petition is denied and the Decision and Resolution of the CA
are affirmed.